Ex Parte Kurita et al

Patent Trial and Appeal Board

Aug 31, 2016

11571749 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111571,749 01/08/2007 Masakazu Kurita 570 7590 09/02/2016 P ANITCH SCHWARZE BELISARIO & NADEL LLP ONE COMMERCE SQUARE 2005 MARKET STREET, SUITE 2200 PHILADELPHIA, PA 19103 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. 9369-128US T37-222479/AIO CONFIRMATION NO. 9844 EXAMINER KELLEHER, WILLIAM J ART UNIT PAPER NUMBER 3658 NOTIFICATION DATE DELIVERY MODE 09/02/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): usptomail@panitchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAKAZU KURITA, TOSHIHARU HIBINO, and JUN HIROSE Appeal2012-003015 Application 11/571,749 Technology Center 3600 Before MICHELLE R. OSINSKI, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Masakazu Kurita et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from the Examiner's Final decision rejecting claims 1-15 under 35 U.S.C. § 102(b) as anticipated by Matsumoto (JP 07-299791, pub. Nov. 14, 1995). 2 Final Act. 2--4. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants identify the real party in interest as N abtesco Corporation (Japan). Br. 2. 2 All references to the text of Matsumoto are to the machine translation entered into the record as an attachment to the Non-Final Office Action (mailed May 13, 2010). Appeal2012-003015 Application 11/571,749 THE CLAIMED SUBJECT MATTER Claims 1, 2, and 3 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. l, A speed reducer to be attached to an articulated portion of an industrial robot, comprising a first-stage reduction gear mechanism and a second-stage reduction gear mechanism, wherein said first-stag:e reduction g:ear mechanism is a .., __ , .., __ , speed reducer for reducing the speed of rotations from a motor and transmitting the speed-reduced rotations to said second- stage reduction gear mechanism, wherein said second-stage reduction g:ear rnechanism is an t.,.,.,, '--' eccentric rocking type speed reducer including an internal gear member~ an external gear member meshing with said internal gear member, a crankshaft engaging \vith said external gear member for eccentrica11y rocking said external gear member with respect to said internal gear rnember, and a support member for supporting said crankshatt rotatably~ so that an output is extracted from said internal gear member or said support member) and wherein the output from said eccentric rocking type speed red11cer is rt1tated at 20 RP?vl or 11igher~ \~l11e11 the in1Jut speed of~ said first-stage reduction gear mechanism is 2,000 RPJ\!1 or higher, characterized in that said crankshaft is rotated at a speed of 1,000 RP.l\ti or lower~ when the output from said eccentric rocking type speed reducer is 20 RPl\/[ or higher, OPINION The Examiner finds that Matsumoto discloses all of the limitations of independent claim 1. Final Act. 2-3. As to "the output from said eccentric rocking type speed reducer [being] rotated at 20 RPM or higher, when the input speed of [the] first-stage reduction gear mechanism is 2,000 RPM or higher" and the "crankshaft [being] rotated at a speed of 1,000 RPM or lower, when the output from [the] eccentric rocking type speed reducer is 20 2 Appeal2012-003015 Application 11/571,749 RPM or higher" (Br. 9 (Claims App.)), the Examiner finds that "[o]peration of the device at the claimed input speeds ... through the reduction gear sets having the ranges specified by Matsumoto ... would inherently result in the crankshaft being rotated at a speed of 1,000 RPM or lower, when the output from said eccentric rocking type speed reducers is 20 RPM or higher." Final Act. 3. The Examiner elaborates that: Matsumoto discloses all of the claimed structure, as well as ranges that contain values for the gear ratios that coincide with values in [Appellants'] ranges .... Therefore, the device of Matsumoto is inherently capable of operating at 1000 rpm or lower when the output from the eccentric rocking type speed reducer is 20 rpm or higher, and the input speed of the first stage reduction mechanism is 2000 rpm or higher. Id. at 4--5. Appellants contend that Matsumoto "addresses only the selection of reduction ratios for low speed operations" and "addresses operation optimally at an input (i.e. motor) speed of 1000 RPM and a maximum of 1500 RPM." Br. 5. Appellants further contend that under the optimal conditions, "the suggested maximum final output speed appears to be only 8.4 RPM in order to avoid an output speed of 12.5 RPM at which maximum resonance is thought to occur." Id. Appellants argue that even under the maximum input speed of 2000 RPM addressed in Matsumoto, "the maximum output speed of the reducer taught by Matsumoto appears to be 5- 9 Hz." Id. Appellants' contentions that Matsumoto is focused on low speed operations under 2000 RPM are not convincing. Although foatures of an apparatus may be recited either st1ucturally or functionally~ claims directed to an apparatus rnust be distinguished frorn the prior art in terms of structure 3 Appeal2012-003015 Application 11/571,749 rather than function. In re Schreiber, 128 F,3d 1473, 1477-78 (Fed. Cir. 1997); see also Hewlett-Packard Co. v. Bausch & Lomb inc.~ 909 F.2d 1464~ 1468 (Fed. Cir. 1990) C'[A]pparatus claims cover what a device is, not \:vhat a device does.'} Therefore, the apparatus of the prior art meets the recited functionally defined limitation (i.e., "wherein the output from said eccentric rocking type speed reducer is rotated at 20 RPivf or higher, when the input speed of said first-stage reduction gear mechanism is 2,000 RPl\1 or higher, characterized in that said crankshaft is rotated at a speed of 1,000 RPl\,1 or lower, when the output from said eccentric rocking type speed reducer is 20 RPl\il or higher"') if it is capable of the recited function. The prior art reference need not envision the device actually being used to perform the claimed function. See Schreiber, 128 F.3d at 1477 ("Although Schreiber is correct that Harz does not address the use of the disclosed structure to dispense popcorn, the absence of a disclosure relating to function does not defeat the Board's finding of anticipation."). Appellants further contend that Matsumoto "provides no guidance for the configuration of such a two stage speed reducer for input (i.e. motor) operating speeds above 1500 RPM or a reducer output speeds above 13 RPM." Br. 5-6. Appellants continue that "the prior art discloses very broad potential ranges of operating speeds and speed reduction ratios," but "says nothing about operation above the speeds it addresses." Id. at 6. Appellants' position is that "[ t ]he fact that prior art equipment being constructed theoretically permits reduction ratio selection and motor speed operation within these broad ranges is irrelevant." Id. We disagree that the broad disclosure of operating speeds and speed reduction ratios is irrelevant. The disclosure provides the Examiner with a 4 Appeal2012-003015 Application 11/571,749 sufficient basis for finding Matsumoto's speed reducer capable of generating results where "output from said eccentric rocking type speed reducer is rotated at 20 RPJ\!1 or higher, when the input speed of said first-stage reduction gear mechanism is 2~000 RPl\/[ or higher'' and "said crankshaft is rotated at a speed of 1,000 RPl'v1 or lower, when the output from said eccentric rocking type speed reducer is 20 RPivf or higher'' under at least some operating conditions. T'he Examiner finds that J\ifatsumoto discloses "fbat His well known in the art of robotic joints, to have a motor speed of up to 5)000 rpm." Ans. 8 (citing J\1atsumoto ir 3). The Examiner also finds that l'vlatsumoto discloses "reduction ratios that overlap vvith the ranges claimed by AppellanC' Id. In particular, l\/fatsumoto discloses that "a moderating ratio of [the] gear-pair-with-parallel axes device is carried out within the limits of 1/2-1/5" and "[a] moderating ratio of [the] epicycle gear drive was carried out within the limits of 1/25 - 1/60." Matsumoto i-f 8. Thus, the Examiner finds that "if the input speed is 2500 rpm ... , the first stage reduction ratio is 113, and the second stage reduction ratio is 1/40, then the total reduction ratio is 11120, ... The maximum crank shaft speed would be 2500/3 = 833.33 ... and the output from the eccentric rocking type speed reducer would be 2500/120 = 20.83:' Final Act 4--5. Appellants have not provided any persuasive argument or evidence that Matsumoto's prior art structure is incapable of performing the functionally defined limitation of the claimed apparatus under at least these operating conditions outlined by the Examiner and disclosed by Matsumoto. Appellants further argue that "[ t ]he mere fact that it may occur that the speed of the crankshaft is less than 1000 RPM under certain conditions is not sufficient to establish inherency, particularly when there is teaching 5 Appeal2012-003015 Application 11/571,749 divergent from the recitation of the claimed invention." Br. 7. For example, Appellants argue that "[ u ]sing the range [of] gear ratios disclosed by Matsumoto for the rear-stage reduction machine, i.e.[,] 1/25 - 1/60 ... for the first configuration example of Figs. 1-3, assuming an output rotational speed of 20 RPM, ... , the crankshaft of Matsumoto's gear drive would experience a rotational speed at least as high as 1200 RPM" and that "[t]he same is true of the second configuration example of Fig. 6[], where the second or rear stage range of gear reduction ratios is 1/30- 1/60." Br. 7 (citing Matsumoto i-fi-1 8, 27-29). Although we agree that for certain gear ratios within Matsumoto's disclosed range, the crankshaft speed would be above 1000 RPM, this does not negate the fact that for other gear ratios within the disclosed range, the crankshaft speed would be at a speed of 1000 RPM or lower, as explained by the Examiner. We need only find that the capability of the Matsumoto apparatus to perform the functionally defined limitation necessarily flows from Matsumoto's teachings. Considering the structural similarity between Matsumoto's apparatus and the claimed apparatus, and the speed reduction ratios disclosed in Matsumoto, the Examiner is on solid ground in finding that Matsumoto's apparatus is necessarily capable of performing the functionally defined limitation. Again, Appellants have not provided any persuasive argument or evidence to support that Matsumoto's prior art structure is incapable of performing the functionally defined limitation of the claimed apparatus. See Schreiber, 128 F.3d at 1478 (affirming anticipation rejection when appellant failed to show that prior art structure did not inherently possess the functionally defined limitation). 6 Appeal2012-003015 Application 11/571,749 For the foregoing reasons, we are not persuaded that the Examiner erred in finding that Matsumoto discloses all of the limitations of independent claim 1, and we sustain the rejection of independent claim 1 as anticipated by Matsumoto under 35 U.S.C. § 102(b). We also sustain the rejection of claims 2-15, for which Appellants rely on the same arguments and reasoning we found unpersuasive in connection with independent claim 1. Br. 7-8. DECISION The Examiner's decision to reject claims 1-15 under 35 U.S.C. § 102(b) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7